~ Strathmore University Centre for Intellectual Property and Information Technology Law (CIPIT)

New Developments under the Lisbon System for Protection of Appellations of Origin and Geographical Indications

Distinctive signs that indicate geographic origin were the earliest types of trademark in the sale of pre -industrial products such as minerals, simple manufactured goods and agricultural products. The use of animals (panda beer), landmarks (Mt. Fuji Sake), and well known personalities (Napoleaon Brandy, Mozart chocolates) are noted as the earliest sort of geographical indications that sought to denote particular locations but also to convey a certain message about the quality and reputation of the product.

TRIPs defines Geographical Indications (GIs) as indications “which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. The World Intellectual Property Organization (WIPO) defines “geographic indication” as a “sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin.”

The Geneva Act of the Lisbon Agreement on Appellations of Origin (AOs) and Geographical Indications (GIs) was adopted on May 20, 2015. The Act has 15 signatories and will enter into force with five ratifications or accessions. The objective of the revision of the Lisbon system was to improve the Lisbon system to make it more attractive for users and prospective new members, while preserving the principles and objectives of the Lisbon Agreement. The aim was also to allow the accession of intergovernmental organizations that administer regional systems for the registration of GIs as well as provide enhanced recognition of the different means of protection of AOs and GIs at the national and regional level.

As many will recall, the Lisbon Agreement of 1958 established to facilitate the international protection of appellations of origin (AOs) through a single registration procedure. It is administered by WIPO, which keeps the International Register of Appellations of Origin (AOs). Lisbon provides the following definition of AO in Art. 2(1): “the geographical denomination of a country, region or locality which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.”

The Geneva Act now includes as its subject matter both AO and GI. This definition refers to a protected indication of a geographical area or known as doing so identifying a good as originating therein quality, reputation or other characteristic attributable to its geographical origin. The Act provides flexibility as to the type of legislation under which a contracting partiy protects registered AOs/GIs (eg. sui generis, Trade Mark, other). Contracting Parties may provide protection in respect of AOs and GIs on the basis of the GI definition only as such they should then protect AOs registered under the Geneva Act as GIs, if these meet the GI definition.

In June 2016, the Working Group for the Preparation of Common Regulations under the Lisbon Agreement and the Geneva Act of the Lisbon Agreement held its first meeting with the aim of coming up with Draft Common Regulations as well as discussing the financial sustainability of the Lisbon Union. The next meeting of the Assembly of the Lisbon Union will take place from October 3 to 11, 2016.